125 U.S.

447
8 S.Ct. 967
31 L.Ed. 807

YALE LOCK MANUF'G CO.

v.
JAMES.1
April 9, 1888.

Frederic H. Betts, for appellant.

Sol. Gen. Jenks, for appellee.
BLATCHFORE, J.

This is a suit in equity, brought by the Yale Lock Manufacturing Company, a

Connecticut corporation, against Thomas L. James, to recover for the alleged
infringement of reissued letters patent No. 8,783, granted to the plaintiff as
assignee of S. N. Brooks, administrator of L. Yale, Jr., deceased, July 1, 1879,
for an 'improvement in post-office boxes,' on an application for a reissue filed
May 23, 1879, (the original patent, No. 119,212, having been granted to Silas
N. Brooks, administrator of Yale, September 19, 1871, on an application filed
September 30, 1868; and having been reissued to said Brooks, as administrator,
July 9, 1872, as No. 4,963, on an application for reissue filed May 7, 1872; and
having been again reissued to said Brooks, as administrator, April 24, 1877, as
No. 7,625, on an application for reissue filed April 19, 1875.) The circuit court
dismissed the bill, and the plaintiff has appealed from its decree. Among other
defenses the answer sets up that each of the three reissues was not for the same
invention as the original patent, but contained material new matter, and was
therefore invalid. Reissue No. 8,783 was the subject of a suit in equity, brought
in the circuit court of the United States for the district of Connecticut, by h e
present plaintiff, against the Scovill Manufacturing Company, in which Judge
SHIPMAN, in June, 1880, gave a decree for the plaintiff as to the first and
second claims of the patent. 18 Blatchf. 248, 3 Fed. Rep. 228. The original
patent contained the following description of the invention: 'This invention
relates to an improvement in the construction of the fronts of post-office boxes,
and consists in making said fronts, including the doors and box frames, of
metal, and in securing the frames to the wooden pigeon-holes by rivets

connecting the frames with each other at top, bottom, and sides. The body of
these boxes is to be made of wood, in the usual manner, namely, a series of
pigeon-holes, but the front of the box and the door frame are made of iron, or
other suitable metal. Each door frame or box front is so made that it aids in
covering the edge of the wooden petition, or pigeon-holes, and is connected
with the other frames above, below, and on each side of it in such manner that
the frames make a continuous frontage, no part of which can be removed (from
the outside) without pulling down other parts, and breaking the wood-work, so
that a surreptitious removal of the front of any box, in order to get possession of
its contents, is practically impossible. Each frame, made, as before stated, of
metal, has all around it a flange, a, a, which protects the outside of the woodwork. The sides of the frame, b, b, enter and fit closely against the wood
forming the pigeon-holes, and may be continuous, or notched out at intervals,
and each frame has attached to it one leaf of two or more hinges, c, c. The door
is of iron, solid at top, where the lock, d, is attached, and having an opening, e,
below, in which a plate of glass is secured. I prefer to locate rods, f, f, behind
the plate, to prevent the introduction of a hand if the glass be broken, and so to
form the door that, when shut, it enters within the frame, (see g, g,) so that it
cannot be lifted from its hinges. When the frames are all in place, each frame is
riveted through the wood-work to its four neighbors, (see h, h, Fig. 2,) and thus
a continuous iron frontage is formed. Each door has a small spring bolt, i, and a
lock, d, attached to it, the two operating together, and forming, in the hands of
the postmaster, a perfect safeguard against all entrance to the box by means of
the key, as is more particularly set forth in my application for a patent therefor,
made equal date with this.' That patent had two claims, as follows: '(1) The
combination of several box frames with each other and with pigeon-holes, as
described, by means of rivets passing through the frames and the wood-work
entering between the said frames, the combination being substantially as
described; (2) the above, in combination with the flanges, making part of the
frames, and protecting and inclosing the exterior of the wood-work,
substantially as set forth.' The first reissue No. 4,963, contained the following
description of the invention: 'This invention relates to an improvement in the
fronts of post-office boxes, and consists in making said fronts, including the
doors and box frames, of metal, said box frames being constructed so as to
overlap and cover, in whole or in part, the front edges of the wooden pigeonholes to which they are affixed. The body of the boxes is to be made of wood in
the usual manner, viz, a series of pigeon-holes, but the front of the box and the
door frame are made of iron, or other suitable metal. Each door frame or box
front is so made that it aids in covering the edge of the wooden partition, or
pigeon-holes, and is connected with the other frames above, below, and on each
side of it in such manner that the frames will make a continuous frontage, no
part of which can be removed from the outside without pulling down other
parts. Each frame, made, as before stated, or metal, has all around it a flag e, a,

a, which protects the outside or edges of the woodwork. The sides of the frame,
b, b, enter and fit closely against the wood forming the pigeon-holes, and may
be continuous, or notched out at intervals; and each frame has attached to it one
leaf of two or more hinges, c, c. The door may be of any desirable metal, solid
where the lock, d, is attached, and having an opening, e, below, in which a plate
of glass is secured. I prefer to locate rods, f, f, behind the plate, to prevent the
introduction of a hand if the glass be broken. The door is so constructed that,
when shut, it enters within the frame, so that it cannot be lifted from its hinges.
When the frames are all in place, each frame is riveted through the wood-work
to its four neighbors, (see h, h, Fig. 2,) and in this way forms a continuous metal
frontage. The door for each frame has a smali spring bolt, i, and a lock, d,
attached to it, the two operating together, and forming, in the hands of the
postmaster, a perfect safeguard against all entrance to the box by means of the
key, as is more particularly set forth in letters patent granted to me on the 24th
day of October, 1871, and numbered 120,177.' That reissue contained two
claims, as follows: '(1) The combination of several box frames with each other
and with pigeon-holes, as described, by means of rivets passing through the
frames and the wood-work entering between the said frames, the combination
being substantially as described; (2) the combination of two or more metallic
frames and doors and locks with pigeon-holes, said frames having flanges,
which protect and inclose, wholly or in part, the front edges of said pigeonholes.' In order to a comparison of the specification and claims of the first
reissue with the specification and claims of the original patent, the parts of each
which are not found in the other are above put in italics.
2

The specification and claims of reissue No. 8,783 are as follows: 'This
invention consists in an improvement in the construction of post-office boxes,
and its chief feature is the combination of a tier of pigeon-holes made of wood
with a continuous frontage of metal, such frontage consisting of doors and their
frames, which latter cover the ends of the boards which form the pigeon-holes.
A series of wooden pigeon-holes, open at the rear, and covered at the front, or
on the outside, by a permanent glass front, is very old, and such a series was
used for post-office boxes, and in hotels as a receptacle for keys, cards, letters,
etc. There has also been in use a series of wooden pigeon-holes, each provided
at one end with a door, as described in the patent granted to Jacob Beidler, may
28, 1866; but in this patent the door is described as hinged to the wood, and the
construction is consequently insecure, as an ordinary pocket-knife or small
chisel will, even in inexperienced hands, suffice to cut away the wood, or pry
off the door, so that the boxes may be entered. Pigeon-holes made of iron or
other metal are difficult to construct, and very costly, but such pigeon-holes,
each provided with an ordinary metal door, would be sufficiently secure. Such a
degree of security at a comparatively low cost is attained by covering the front

of a series of wooden pigeon-holes with a continuous metallic frontage, that is,

a frontage which presents a continuous surface of metal, or, in other words, a
surface which covers the ends of the wooden pigeon-holes in such manner that
those portions of the wood to which the metallic frames are attached cannot be
attacked when the doors making part of the frontage are closed. In constructing
Yale's invention the body of the boxes, or the series of pigeon-holes, is to be
made of wood in any usual manner, and the fronts thereof, viz., the doors and
their frames, are to be made of iron, or other suitable metal. Each door frame is
of such size that it aids in covering the ends of the wooden partitions thatf orm
the pigeon-holes to which it is applied, and these frames (see Fig. 1) are of such
size and shape that, where a series of them are combined with a series of
pigeon-holes, they cover the whole of the ends of the wood. Each door frame is
a plate of metal, a, a, which, when in place, overlaps a part of the ends of the
woodwork surrounding the pigeon-hole, the outside of the frame inclosing a
greater area than the orifice of the pigeon-hole, and each frame has an ear, b, b,
which enters the pigeon-hole; but this ear may be either continuous, or notched
out at intervals. The door is of iron or other metal, solid at top and having an
opening, e, below, in which a plate of glass is secured, and is hinged to the
frame as at c, c. It is preferable to locate rods, f, f, behind the plate, so as to
prevent the introduction of a hand if the glass be broken, and so to form and
hinge the door that, when shut, it enters within the frame, so that it cannot be
lifted from its hinges when shut. When the frames are all in place, each frame
is riveted or bolted to the wood-work to fasten it thereto, and is also riveted or
bolted to its four neighbors to secure the frames to each other. (See h, h, Fig. 2.)
Thus each frame is secured to the wood-work, so that it cannot be removed till
the rivet or the wood-work is cut away or broken. When all the frames are in
place, a continuous metallic frontage protecting the wood-work is presented
upon the outside of the series of boxes, that is, the side where the public can
approach the boxes. Each door has a lock attached to it, the bolt of which is
actuated through the intervention of an arm, k, in the manner and for the
purposes set forth in a patent granted for the invention of Linus Yale, Jr., on the
24th day of October, 1871, No. 120,177. An iron door in an iron frame is not
claimed as of Yale's invention, as such doors have been used in safe-vaults and
for furnaces. What is claimed as the invention of said Linus Yale, Jr., deceased,
is (1) the combination, substantially as specified, of a series of metallic door
frames and doors with a series of wooden pigeon-holes, whereby a series of
post-office boxes with a continuous metallic frontage is formed; (2) the
combination, substantially as described, of a series of wooden pigeon-holes
with a series of metallic door frames and doors, and with rivets or bolts which
attach the frames to the wood-work, whereby a continuous metallic frontage
secured to the wood-work of pigeon-holes is obtained; (3) the combination,
substantially as described, of a series of wooden pigeon-holes with a series of
metallic door frames and doors, and with rivets or bolts which attach the frames

both to the wood-work and to each other, the combination being substantially
such as described; (4) the combination of a metallic door with a glass panel and
with a frame to which the door is hinged, said frame being so constructed as to
cover a part of the ends of the wooden partitions forming pigeon-holes, and
being applied thereto, the combination being substantially as specified; (5) the
combination of a post-office box or pigeon-hole, open at the rear, with a
metallic frame and door to protect the front end of it.' Claims 4 and 5 were
disclaimed by the plaintiff, November 29, 1880. Claim 1 of the first reissue was
the same as claim 1 of the original patent, while claim 2 of the first reissue was
in these words: '(2) The combination of two or more metallic frames and doors
and locks with pigeon-holes, said frames having flanges which protect and
inclose, wholly or in part, the rront edges of said pigeon-holes.' In the opinion
of the circuit court in the present case, (22 Blatchf. 294, 20 Fed. Rep. 903,)
Judge SHIPMAN says: 'The defendant, as postmaster in the city of New York,
and not otherwise, used in the post-office, provided and equipped for him by
the United States government, wooden post-office boxes, with metallic fronts
and doors, and open at the rear. They were manufactr ed by the Johnson Rotary
Lock Company. The doors and door frames made a continuous metallic
frontage. The door frames were secured to each other and to the wood-work as
follows: at about the middle of each vertical edge of each door frame there was
a triangular hole, which, with the corresponding hole in the adjoining door
frame, made a rectangular hole, through which the metal fastening bolt,
completely filling such hole, was passed, the heads of such bolts overlapping
the contiguous edges of adjoining metallic fronts, and the bolt itself passing
through the wooden partition between the adjoinion pigeon-holes, and being
secured at the back thereof, within the post-office room, by a nut screwed upon
the end of the bolt. There were other boxes constructed substantially as above
described, excepting that the metal front of each pigeon-hole was fastened to
the wood-work by means of flanges and screws, but the screws which attached
the frames to the wood-work did not attach the frames to each other. Neither
series of boxes would have infringed either claim of the original patent. Each
series infringes the first and second claims of the present reissue, unless these
claims are to receive a construction which shall compel the metallic frontage to
be made continuous by rivets, bolts, or fastenining which shall attach the
frames both to the wood-work and to each adjoining frame. The plaintiff insists
that these claims should not receive such a construction, because it has been
found that the invention of the specification of the reissue, although a broader
one than was described in the original patent, is the invention which the history
of the art and the patent show should have been described, and because the first
reissue was promptly applied for, and, as issued, included in its second claim, in
the view of the plaintiff, the same invention which is described in the first and
second claims of the reissue. The defendant says, among other thing, that, since
the cases of Miller v. Brass Co., 104 U. S. 350, and James v. Campbell, Id.

356, it has been settled by the supreme court that the commissioner of patents,
in allowing the first and second claims, exceeded his jurisdiction, because the
invention which was first applied for, and was 'complete in itself' was clearly,
specifically, and fuly described in the original specification, and in the claim,
and an expanded claim would necessarily include an invention which was not
sought to be described in the original patent; and, furthermore, that there could
have been no inadvertence or mistake, because the original patent and the
accompanying documents show that the patentee 'did not intend it' (the patent)
'to embrace any such broad invention' as was described in the reissue. The
defendant also says that the patentee, in his application for the first reissue,
ineffectually endeavored to alter the description of the invention so as to omit
the fastening of the door frames to each other as a necessary integral part of the
invention, and that the second claim of the first reissue cannot fairly be
construed to permit such omission, and therefore that the patentee is estopped
from insisting upon a broad construction of the first and second claims of the
present reissue, and that these claims are objectionable on account of the laches
of the patentee. The 'file wrapper and contents' of the first reissue were not a
part of the record in the Scovill Case.'
3

In order to show the changes made in the specification and claims of the first
reissue as they passed through the patent office, the specification and claims of
that reissue as granted, and the specification and claims of the same as applied
for, are here placed in parallel columns, the parts of the latter which are not
contained in the former being in italics and brackets, and being numbered
severally from 1 to 8:

As Applied for.

'This invention relates to an improvement in the fronts of post-office boxes, and

consists in making said fronts, including the doors and box frames, of metal,
said box frames being constructed so as to overlap and cover, in whole or in
part, the front edges of the wooden pigeon-holes to which they are affixed,
[1 and in securing said frames to said pigeon-holes by rivets or screws.] The
body of the boxes is to be made of wood in the usual manner, viz., a series of
pigeon-holes, but the front of the box and the door frame are made of iron, or
other suitable metal. Each door frame or box front is so made that it aids in
covering the edge of the wooden partition, or pigeon-holes, and [2 may be]
connected with the other frames above, below, and on each side of it in such
manner that the frames will make a continuous frontage, no part of which can
be removed from the outside without pulling down other parts, [3 or the several
frames may be secured or otherwise fastened directly to the wooden pigeon-

holes, each one independent of the other, if desired.] Each frame made, as
before stated, of metal, has all around it a flange, a, a, which protects the
outside or edges of the wood-work. The sides of the frame, b, b, enter and fit
closely against the wood forming the pigeon-holes; and may be continuous, or
notched out at intervals, and each frame has attached to it one leaf of two or
more hinges, c, c. The door may be of any desirable metal, solid where the
lock, d, is attached, and having an opening, e, below, in which a plate of glass
is secured. [4 Cast with the door, and over the opening, e, for glass, may be a
network, or ornamental open work, admitting light, and at the same time
preventing the introduction of a hand if the glass be broken; or rods, f, f, may
be located behind the plate for the same purpose.] The door is so contructed,
that, when shut, it enters within the frame, [5 see g, g,] so that it cannot be lifted
from its hinges. When the frames are all in place, each frame [ 6 may be] is A
rivited through the woodwork to its four neighbors, (see h, h, Fig. 2,) and in this
way form a continuous metal frontage, [7 or each separate frame may be
screwed or otherwise fastened to the wood-work independent of its neighboring
frames.] The door for each frame has a small spring bolt, i, and a lock, d,
attached to it, the two operating together, and forming, in the hands of the
postmaster, a perfect safeguard against all entrance to the box by means of the
key, as is more particularly set forth in letters patent granted to me on the 24th
day of October, 1871, and numbered 120, 177.
6

'What I claim as the invention of the said Linus Yale, Jr., deceased, isFirst,
the combination of several box frames with each other and with pigeon-holes,
as described, by means of rivets passing through the frames and the wood-work
entering between the said frames, the combination being substantially as
described; second, the combination of two or more metallic frames and doors
and locks with pigeon-holes, said frames having flanges, which protect and
inclose, wholly or in part, the front edges of said pigeon-holes; [8 third, the
combination of several metallic box frames with each other and with pigeonholes, said box frames being secured to said pigeon-holes independently of
each other, by means of screws, or other similar fastening, as described.]' As
Granted.

'This invention relates to an improvement in the fronts of post-office boxes, and

consists in making said fronts,including the doors and box frames, of metal,
said box frames being constructed so as to overlap and cover, in whole or in
part, the front edges of the wooden pigeon-holes to which they are affixed. The
body of the boxes is to be made of wood in the usual manner, viz., a series of
pigeon-holes, but the front of the box and the door frame are made of iron, or
other suitable metal. Each door frame or box front is so a de that it aids in

covering the edge of the wooden partition, or pigeon-holes, and is connected

with the other frames above, below, and on each side of it in such manner that
the frames will make a continuous frontage, no part of which can be removed
from the outside without pulling down other parts. Each frame, made, as before
stated, of metal, has all around it a flange, a, a, which protects the outside or
edges of the work-work. The sides of the frame, b, b, enter and fit closely
against the wood forming the pigeon-holes, and may be continuous, or notched
out at intervals, and each frame has attached to it one leaf of two or more
hinges, c, c. The doormay be of any desirable metal, solid where the lock, d, is
attached, and having an opening, e, below, in which a plate of glass is secured. I
prefer to locate rods, f, f, behind the plate, to prevent the introduction of a hand
if the glass be broken. The door is so constructed, that, when shut, it enters
within the frame, so that it cannot be lifted from its hinges. When the frames
are all in place each frame is riveted through the wood-work to its four
neighbors, (see h, h, Fig. 2,) and in this way forms a continuous metal frontage.
The door for each frame has a small spring bolt, i, and a lock, d, attached to it,
the two operating together, and forming, in the hands of the postmaster, a
perfect safeguard against all entrance to the box by means of the key, as is more
particularly set forth in letters patent granted to me on the 24th day of October,
1871, and numbered 120,177.
8

'What I claim as the invention of the said Linus Yale, Jr., deceased, is (1) the
combination of several box frames with each other and with pigeon-holes, as
described, by means of rivets passing through the frames and the wood-work
entering between the said frames, the combination being substantially as
described; (2) the combination of two or more metallic frames and doors and
locks with pigeon-holes, said frames having flanges, which protect and inclose,
wholly or in part, the front edges of said pigeon-holes.'

9 the 8th of May, 1872, the patent office examiner called the attention of the
On
applicant to the fact that the following matters in the new specification were not
warranted by the original patent, namely: the words 'or screws,' in the part marked
'1;' the words 'may be,' in the parts marked '2' and '6;' the parts marked '3,' '4,' and '7;'
and the third claim, being the part marked '8.' On the 9th of May, 1872, the
applicant appealed to the commissioner of patents in person, because the examiner
had refused to examine the case on its merits, in view of the introduction of such
new matter; but, on the next day, the applicant virtually withdrew his appeal, by
amending his application as follows: he erased part 1; he erased the words 'may be,'
in parts 2 and 6, and substituted in each case the word 'is;' he erased parts 3 and 4,
and substituted for the latter the words, 'I prefer to locate rods, f, f, behind the plate
to prevent the introduction of a hand if the glass be broken.' He also erased part 7,
and claim 3, part 8, and submitted the case for further action. The application was

then reconsidered, and twice rejected, and from the second rejection the applicant
appealed to the examiners in chief, who reversed the decision of the examiner, and
the reissue was granted, July 9, 1872.
10

In view of these facts, Judge SHIPMAN, in his decision in the present case,
said: 'It is unquestionable that the patentee, when he made his original
application, intended to say that his invention did not consist simply in making,
by his combination of metallic doors, door frames, and wooden boxes, a
continuous metallic frontage, but that it also consisted in the way in which the
frontage was made continuous, viz., by the connection of the adjoining frames
with each other. His definite and exact specification shows that he supposed
that his patental e invention was thus limited. He described with precision and
clearness that his metallic frontage was to be so constructed that the frames
were to be fastened to each other at top, bottom, and sides, and not merely to the
wood-work. 'A specific invention, complete in itself,' was described, 'fully and
clearly, without ambiguity or obscurity.' Under the definitions which are given
in the decisions which have been referred to, and in Manufacturing Co. v.
Ladd, 102 U. S. 408, of the inadvertence, accident, or mistake which permits a
reissue when a patent is said to be inoperative on account of a defect or
insufficiency in the specification, which arose through such inadvertence or
mistake, and also of the nature of the defectiveness or insufficiency which is
meant by the statute, there was no mistake, although the patentee might have
fallen into an error of judgment, or into an erroneous conclusion of fact; and,
furthermore, the original patent, according to the definitions contained in the
recent, and perhaps in the earlier, cases, was not defective nor insufficient,
either in its descriptive portion, or in its claims. The second claim of the first
reissue, construed in the light of the contemporaneous facts which are shown in
the 'file wrapper and contents,' cannot be fairly construed to mean a metallic
frontage irrespective of the fastening of the frames to each other through the
wood-work. Were this claim to be construed without study of the history of the
application as it made its way through the patent office, and of the amendments
which it was compelled to undergo, it would probably receive the construction
which naturally belongs to the first claim of the present reissue. But the
patentee abandoned, under pressure from the patent office, the clauses in the
application which made the fastening of the frames to each other to be optional,
and abandoned also a proposed third claim which described the box frames as
secured to the pigeon-holes 'independently of each other, by means of screws,
or other similar fastening.' In view of the fact that the patent office excluded
from the desriptive part of the specification suggestions of any other method of
fastening than that by which the frames were to be fastened to each other, it
would be singular if the intent of the office was to include in the second claim
such other method of construction. If this claim has properly, and the applicant

knew that it was intended to have, a narrow construction, (and of this

knowledge I think there can be little doubt,) the plaintiff would not insist that
the first and second claims of the present reissue ought, in view of the decision
in Miller v. Brass Co., supra, to be so construed as to be any broader than the
third claim, which requires the combination of door frames, doors, and pigeonholes to be by means of rivets or bolts which attach the frames both to the
wood-work and to each other.' It was held that there was no infringement, and,
on that ground, the bill was dismissed.
11

We concur in these views of the circuit court, and in the result which it reached.
In view of the numerous recent decisions of this court on the subject of reissued
patents, it would serve no good purpose to expand or amplify the views so well
expressed by the judge at circuit. They are supported by the decisions in Miller
v. Brass Co., 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354, 5 Sup. Ct. Rep.
174; Parker v. Clock Co., 123 U. S. 87, 8 Sup. Ct. Rep. 38; Matthews v.
Manufacturing Co., 123 U. S. 374, 8 Sup. Ct. Rep. 639.

12

Our conclusion makes it unnecessary to consider the defense raised in the

answer, and urged in argument, that the post-office boxes used by the defendant
were used by him as postmaster of the United States at the city of New York;
that the boxes were the property of the United States and were rented by it to
sundry persons; that the rent was a part of the postal revenue of the United
States, and was not a source of personale molument to the defendant; that it was
not within the power of the defendant to remove or alter the boxes; and that the
use of such boxes at the post-office, while the defendant was post-master, was
not an infringement of the patent by him, and did not make him liable to this
suit. Decree affirmed.

Affirming 20 Fed. Rep. 903.

[Argument of Counsel from pages 447-451 intentionally omitted]